Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC

Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC

The application by Warner-Lambert to amend claim 3 post-trial is an abuse of process because it could and should have been made before trial. Allowing the amendment would require a second trial on validity, contrary to the principles of procedural finality and economy. Warner-Lambert had ample opportunity to seek amendment earlier and was not procedurally ambushed. The balance of justice and public interest favours striking out the application.

Parties
Claimant: Generics (UK) Limited trading as Mylan; Claimant: Actavis Group PTC EHF; Defendant/claimant/part 20 Claimant: Warner-Lambert Company LLC; Defendant/part 20 Defendant: Actavis UK Limited; Defendant/part 20 Defendant: Caduceus Pharma Limited; Defendant/part 20 Defendant: Pfizer Limited
Jurisdiction
England and Wales
Judgment Date
25 November 2015
Procedural Posture
Patent Revocation and Amendment Proceedings / Post Trial Application to Amend Patent, Preliminary Hearing on Abuse of Process
Outcome
Application to amend claim 3 struck out as abuse of process
Legal Topics
Patent Amendment, Abuse of Process, Sufficiency of Disclosure, Revocation of Patent, Procedural Fairness
Intellectual Property Civil Procedure Patent Amendment Abuse of Process Sufficiency of Disclosure Revocation of Patent Procedural Fairness

Case Brief

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Parties

Generics (UK) Limited trading as Mylan

Claimant

Actavis Group PTC EHF

Claimant

Warner-Lambert Company LLC

Defendant/claimant/part 20 Claimant

Actavis UK Limited

Defendant/part 20 Defendant

Caduceus Pharma Limited

Defendant/part 20 Defendant

Pfizer Limited

Defendant/part 20 Defendant

Procedural Posture

Patent Revocation and Amendment Proceedings / Post Trial Application to Amend Patent, Preliminary Hearing on Abuse of Process

Legal Issues

  1. 1 Whether Warner-Lambert's post-trial application to amend claim 3 of the patent constitutes an abuse of process
  2. 2 Whether the amendment application could and should have been made before trial
  3. 3 Whether allowing the amendment would necessitate a second trial and delay resolution

Ratio Decidendi

The application by Warner-Lambert to amend claim 3 post-trial is an abuse of process because it could and should have been made before trial. Allowing the amendment would require a second trial on validity, contrary to the principles of procedural finality and economy. Warner-Lambert had ample opportunity to seek amendment earlier and was not procedurally ambushed. The balance of justice and public interest favours striking out the application.

Court Disposition

Application to amend claim 3 struck out as abuse of process

Orders

  • Warner-Lambert's application to amend claim 3 of the Patent is struck out.